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EXHIBIT 10.2
INTELLECTUAL PROPERTY RIGHTS AGREEMENT
by and between
GREEN LIMITED
and
EXISTING VENTURE LLC
Dated as of October 18, 2000
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TABLE OF CONTENTS
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ARTICLE I CERTAIN DEFINITIONS.................................................................................... 1
1.01. CERTAIN DEFINITIONS.................................................................................. 1
ARTICLE II INTELLECTUAL PROPERTY TRANSFERS....................................................................... 5
2.01. TRANSFERRED INTELLECTUAL PROPERTY...................................................................... 5
2.02. EXCLUDED ASSETS........................................................................................ 5
2.03. NON-ASSIGNABLE IPR CONTRACTS........................................................................... 5
2.04. ASSUMED LIABILITIES.................................................................................... 5
2.05. EXCLUDED LIABILITIES................................................................................... 6
2.06. TAXES.................................................................................................. 6
ARTICLE III INTELLECTUAL PROPERTY LICENSES....................................................................... 6
3.01. LICENSED INTELLECTUAL PROPERTY - LICENSED PRODUCTS..................................................... 6
3.05. LICENSED INTELLECTUAL PROPERTY - EXISTING VENTURE ROYALTY PRODUCTS..................................... 7
3.09. IMPROVEMENTS........................................................................................... 9
3.14. SUPPLY LICENSE TO GREEN COMPONENTS..................................................................... 10
3.15. PACKETPORT ............................................................................................ 10
ARTICLE IV CONFIDENTIAL INFORMATION.............................................................................. 12
ARTICLE V REPRESENTATIONS AND WARRANTIES......................................................................... 13
ARTICLE VI TERMINATION........................................................................................... 14
ARTICLE VII MISCELLANEOUS........................................................................................ 14
7.01. COUNTERPARTS........................................................................................... 14
7.02. GOVERNING LAW.......................................................................................... 14
7.03. ASSIGNMENT; CHANGE OF CONTROL.......................................................................... 14
7.04. EXPENSES............................................................................................... 14
7.05. NOTICES................................................................................................ 14
7.06. ENTIRE AGREEMENT....................................................................................... 15
7.07. PUBLICITY.............................................................................................. 15
7.08. SEVERABILITY........................................................................................... 16
SCHEDULE A EXISTING VENTURE INTELLECTUAL PROPERTY RIGHTS......................................................... 17
SCHEDULE B EXISTING VENTURE PRODUCTS............................................................................. 18
SCHEDULE C COMPETING COMPANIES................................................................................... 19
SCHEDULE D IPR CONTRACTS......................................................................................... 20
SCHEDULE E LICENSED INTELLECTUAL PROPERTY RIGHTS................................................................. 21
SCHEDULE F TRANSFERRED INTELLECTUAL PROPERTY RIGHTS.............................................................. 22
SCHEDULE G IPR CONTRACT ASSIGNMENT FORM LETTER................................................................... 23
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SCHEDULE H GREEN REPRESENTATIONS AND WARRANTIES.................................................................. 24
SCHEDULE I GREEN COMPONENTS...................................................................................... 25
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INTELLECTUAL PROPERTY RIGHTS AGREEMENT
This Intellectual Property Rights Agreement (this "IPR Agreement"),
dated as of ____, 2000, is by and between GREEN LIMITED, a corporation
organized under the laws of Canada ("Green"), on its behalf and on behalf of
its wholly owned subsidiaries (hereinafter collectively "Green"), and EXISTING
VENTURE LLC, a limited liability company organized under the laws of Delaware
("Existing Venture").
WITNESSETH:
WHEREAS pursuant to the Intellectual Property Rights Agreement
effective November 17, 1995 among Egret Corporation, Green Inc. (a wholly owned
subsidiary of Green) and Existing Venture, as amended by the Agreement dated
February 27, 1998 among Egret Corporation, Green Inc. and Existing Venture, and
by the Amendment to Intellectual Property Rights Agreement dated March 31, 1999
among Egret Corporation, Green, Green Inc. and Existing Venture, the respective
parties had defined their rights and obligations with respect to certain joint
development activities; and
WHEREAS pursuant to the License Agreement entered into November 17,
1995 between Green Inc. and Existing Venture, as amended by the Agreement dated
February 27, 1998 among Egret Corporation, Green Inc. and Existing Venture, and
by the Amendment to License Agreement dated March 31, 1999 among Green, Green
Inc. and Existing Venture, Green and Green Inc. granted Existing Venture
certain license rights under Intellectual Property Rights in Cornerstone Total
Access, Voice and Data and BTD Cable Modem products; and
WHEREAS, pursuant to the Agreement and Plan of Reorganization (the
"Merger Agreement") Green LLC contributed all of its interest in Existing
Venture to Newco, Inc. and, accordingly, Newco, Inc. owns or controls, directly
or indirectly, 100% of the interest in Existing Venture; and
WHEREAS Existing Venture seeks to have ownership of certain
Intellectual Property Rights of Green Ltd., and to modify certain Intellectual
Property Rights it had licensed from Green. and Green Inc., and Green. and
Green Inc. are willing to grant such ownership and modifications subject to the
terms and conditions hereof.
NOW, THEREFORE, in consideration of the mutual representations,
warranties, covenants and agreements contained herein, and intending to be
legally bound hereby, the parties agree as follows:
ARTICLE I
CERTAIN DEFINITIONS
1.01. Certain Definitions. As used herein, unless otherwise defined
below, capitalized terms have the meaning ascribed to them in the Merger
Agreement:
"Administrative Services" means any financial, human resources, sales
and marketing, order management, bills of materials, logistics, customs/excise,
information systems, or
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administrative process or services, including any computer software used in
connection therewith, supplied to Existing Venture by or on behalf of Green or
any of its Affiliates.
"Affiliate" shall mean a company which Green effectively owns or
controls, and continues to own or control, directly or indirectly, fifty
percent (50%) or more of the voting stock or ownership interest therein, and
shall include its parent Green Corporation and its Affiliates.
"Existing Venture" shall have the meaning set forth in the first
paragraph of this Agreement.
"Existing Venture Company" shall mean any of Existing Venture, Egret
Corporation and Newco, and "Existing Venture Companies" shall mean all of
Existing Venture, Egret Corporation and Newco.
"Existing Venture Intellectual Property Rights" means all of the
Intellectual Property Rights that are owned by Existing Venture as at the
Effective Time, a complete list of which is attached hereto as Schedule A.
"Existing Venture Products" shall mean those products of Existing
Venture, in existence as at the Effective Time, identified on Schedule B,
attached hereto.
"Existing Venture Royalty Products" shall mean those products and
services of a Licensed Existing Venture Company which embody Licensed
Intellectual Property Rights, and which are (i) not natural improvements and
evolutions of Licensed Products, and/or (ii) not used in the delivery of
narrowband and broadband services over Hybrid Fiber Coaxial Cable Networks.
"CMTS IPR" shall mean those Transferred Intellectual Property Rights
that as of the Effective Time are (i) owned by Green, and (ii) either
exclusively embodied in or used by the Existing Venture Product known as CMTS,
or exclusively used in the development, manufacture and sale of CMTS.
"Competing Company" shall mean any of the companies listed in Schedule
C, attached hereto, and shall include any Person that directly, or indirectly
through one or more intermediaries, controls, is controlled by, or is under
common control with, such companies.
"Confidential Information" shall mean information disclosed from one
Party to the other which is marked "confidential" or "proprietary" or by words
of like import, or which because of its nature or the circumstances surrounding
its disclosure would reasonably be considered to be confidential.
"Copyrights" shall have the meaning set forth in the definition of
Intellectual Property Rights.
"Excluded Intellectual Property" means Intellectual Property Rights
embodied in or related to Administrative Services, Green Components, or Design
Tools (as defined in the Design Tool License Agreement between the parties
dated October __, 2000).
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"Hybrid Fiber Coaxial Cable Network" shall mean a broadcast network
that combines coaxial cable and fiber optic cable (but not including all-fiber
or fiber-copper networks) in the delivery of services from headend to
subscriber premises.
"Improvements" shall mean improvements, innovations, enhancements,
modifications or derivative works by an Existing Venture Company to the
Licensed Intellectual Property Rights after the Effective Time.
"Intellectual Property Rights" shall mean all intellectual property
rights arising from or associated with the following, whether protected,
created or arising under the laws of the United States or any other
jurisdiction: (A) trade names, registered and unregistered trademarks and
service marks, brand names, internet domain names, and trade dress and rights,
trade names, business names, words, symbols, color schemes and other
indications of origin, and all applications (including intent to use
applications) to register any of the foregoing, and all goodwill associated
with any of the foregoing (collectively, "Trademarks"); (B) patents or models,
industrial designs and all applications therefor, including any and all
continuation, divisional, provisional, continuation-in-part, reexamination and
reissue patent applications and their extensions, and any patents issuing
therefrom (collectively, "Patents"); (C) trade secrets, knowhow and other
confidential or non-public business information, including ideas, formulas,
compositions, inventions, inventors' certificates, invention disclosures,
discoveries and improvements, know-how, manufacturing and production processes
and techniques, and research and development information; drawings,
specifications, plans, proposals and technical data; financial, marketing and
business data, pricing and cost information; business and marketing plans and
customer and supplier lists and information, including rights to limit the use
or disclosure of confidential information by any Person; in each case whether
patentable, copyrightable or not ("Trade Secrets"); (D) computer programs,
software, firmware and databases, including the routines, subroutines,
concepts, processes, algorithms, formulas, ideas and know-how contained
therein, and any corrections, "patches", updates, upgrades or revisions
thereto, and all documentation therefor, in each case whether patentable,
copyrightable or not (collectively, "Software"); (E) copyrights and moral
rights in writings and other works of authorship, including marketing
materials, brochures, training materials, and Software, including all
registrations and applications therefor (collectively, "Copyrights"); and (F)
mask work and similar rights, including rights created under Sections 901-914
of Title 17 of the United States Code, including all registrations and
applications to register any of the foregoing, and any other rights protecting
integrated circuit or chip topographies or designs (collectively, "Mask
Works").
"IPR Agreement" shall have the meaning set forth in the first
paragraph of this IPR Agreement.
"IPR Contracts" shall mean the contracts, purchase orders, agreements,
third party software licenses and other rights and obligations of Green and its
Affiliates relating to the Transferred Intellectual Property Rights which are
to be assumed by Existing Venture, all of which are listed in Schedule D
attached hereto;
"Licensed Intellectual Property Rights" shall mean those Intellectual
Property Rights owned by Green and embodied in, used by, or used in the
development, manufacture, and sale of, Existing Venture Products as of the
Effective Time, but shall not include any Trademarks owned
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by Green, Transferred Intellectual Property Rights or Excluded Intellectual
Property Rights, and shall include, without limitation, those Intellectual
Property Rights listed in Schedule E, attached hereto.
"Licensed Products" means Existing Venture Products and natural
improvements and evolutions thereof used in the delivery of narrowband and
broadband services over Hybrid Fiber Coaxial Cable Networks.
"Green" shall have the meaning set forth in the first paragraph of
this Agreement.
"Green Components" means the materials, components, assemblies or
parts which were supplied by Green or its Affiliates prior to the Effective
Time and which are listed on Schedule I.
"Green LLC" shall have the meaning set forth in the first paragraph of
this Agreement.
"Green Royalty Products" shall mean those products and services of
Green or its Affiliates which embody Transferred Intellectual Property Rights
or Venture Intellectual Property Rights, other than CMTS IPR, and which provide
substantially identical functionality as that provided by the Existing Venture
Products.
"Party" shall mean either of Green or Existing Venture, and "Parties"
shall mean both Green and Existing Venture.
"Patents" shall have the meaning set forth in the definition of
Intellectual Property Rights.
"Software" shall have the meaning set forth in the definition of
Intellectual Property Rights.
"Trade Secrets" shall have the meaning set forth in the definition of
Intellectual Property Rights.
"Trademarks" shall have the meaning set forth in the definition of
Intellectual Property Rights.
"Transferred Intellectual Property Rights" means the Transferred
Patents, the Transferred Trademarks and the Transferred Other IPR, a complete
list of which is attached hereto as Schedule F.
"Transferred Other IPR" means the Intellectual Property Rights, other
than Patents and Trademarks that are listed under the heading "Transferred
Other IPR" in Schedule F attached hereto.
"Transferred Patents" means the Patents that are listed under the
heading "Transferred Patents" in Schedule F attached hereto.
"Transferred Trademarks" means the Trademarks that are listed under
the heading "Transferred Trademarks" in Schedule F attached hereto, and all
goodwill associated therewith.
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ARTICLE II
INTELLECTUAL PROPERTY TRANSFERS
2.01. Transferred Intellectual Property. Subject to the terms and
conditions hereof, Green hereby transfers, conveys and assigns to Existing
Venture, and Existing Venture hereby acquires, Green' entire right, title and
interest in, to and under the Transferred Intellectual Property Rights. Green
shall transfer all of its interest in the Transferred Intellectual Property
Rights by delivering to Existing Venture an executed assignment document and
thereafter delivering to Existing Venture such other documents as Existing
Venture may reasonably request to effect the transfer and the registration
thereof.
2.02. Excluded Assets. All other Intellectual Property Rights,
technology, real property, personal property, agreements and all other assets
owned, leased or otherwise possessed by Green are specifically excluded from
the Transferred Intellectual Property Rights and any contribution or
acquisition pursuant to this IPR Agreement.
2.03. Non-Assignable IPR Contracts. This IPR Agreement and any
document delivered hereunder shall not constitute an assignment or an attempted
assignment of any IPR Contract contemplated to be assigned to Existing Venture
hereunder and:
(a) not assignable without the consent of a third Person
if such consent has not been obtained and such assignment or attempted
assignment would constitute a breach thereof; or
(b) in respect of which the remedies for the enforcement
thereof available to Green would not pass to Existing Venture.
Green shall use its commercially reasonable efforts to obtain such consents of
third Persons as may be necessary for the assignment of the IPR Contracts,
provided that Green shall not be obliged to make any payments to such third
Persons in addition to those required to be made thereunder in order to obtain
such consents, unless Existing Venture reimburses Green for such payments at
the time such payments are made. Existing Venture shall cooperate in all
reasonable respects with Green to obtain all such consents and to resolve all
matters necessary to assign such IPR Contracts to Existing Venture. The Parties
shall execute and deliver a letter, substantially in the form of Schedule G
attached hereto, to all applicable third Persons in order to either effect such
assignments or to enter into new arrangements between Existing Venture and the
applicable third Person. To the extent that, in the sole opinion of Green, any
of the foregoing items are not assignable by the terms thereof or consents to
the assignment thereof cannot be obtained as herein provided, such items shall
be held by Green for the benefit of Existing Venture and the covenants and
obligations thereunder shall be performed by Existing Venture in the name of
Green and all benefits and obligations existing thereunder shall be for the
account of Existing Venture.
2.04. Assumed Liabilities. Upon and subject to the terms and
conditions hereof, at the Effective Time, Existing Venture shall assume and
become responsible for, and shall thereafter
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pay, perform, discharge and satisfy the following obligations and liabilities
(collectively, the "Assumed Liabilities"):
(a) all obligations and liabilities under the IPR
Contracts required to be performed from and after the Effective Time; and
(b) all other obligations and liabilities relating to
the Transferred Intellectual Property Rights that arise or are incurred from
and after the Effective Time.
2.05 Excluded Liabilities. The Assumed Liabilities shall not
include, and Existing Venture shall not assume or become responsible for, any
of the following obligations or liabilities (collectively, the "Excluded
Liabilities"):
(a) all accounts payable in connection with the
Transferred Intellectual Property Rights as at the Effective Time; and
(b) all obligations and liabilities relating to the
Transferred Intellectual Property Rights that were required to be performed
prior to the Effective Time,
provided that nothing in this Section 2.05 shall be construed to negate any
liability or obligation explicitly assumed by Existing Venture elsewhere in
this IPR Agreement.
2.06. Taxes. Existing Venture shall pay or cause to be paid all
sales and use taxes, privilege or other taxes, if any, which are based either
on the circumstances of transfer or on the value of any Transferred
Intellectual Property Rights that is to be sold or contributed by Green
pursuant hereto that may be imposed on or in connection with the contributions,
conveyances, assignments, transfers and deliveries to be made hereunder by
Green.
ARTICLE III
INTELLECTUAL PROPERTY LICENSES
3.01. Licensed Intellectual Property - Licensed Products. Subject
to the terms and conditions of this IPR Agreement, Green hereby grants to
Existing Venture Companies a personal, non-assignable (except as permitted in
Section 3.03), royalty-free, fully paid-up, non-exclusive, world-wide license
under the Licensed Intellectual Property Rights to design, develop,
manufacture, use, reproduce, modify, perform, lease, sell, offer for sale and
import Licensed Products. Such right shall include the right to have Licensed
Products designed and developed by a third Person for the manufacture, use,
sale or lease by Existing Venture Companies, provided such third Person is not
a Competing Company. Furthermore, such right shall also include the right to
have such Licensed Products made by a third Person for the use, sale or lease
by Existing Venture Companies, but only when both of the following conditions
are met:
(a) the designs, specifications and working drawings for the
manufacture of said Licensed Products are furnished by Existing Venture
Companies; and
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(b) said designs, specifications and working drawings
are in sufficient detail that no material modification by the manufacturer is
required other than (i) adaptation to the production processes and standards
normally used by the manufacturer which changes the characteristics of the
Licensed Products only to a negligible extent, or (ii) as required by the
manufacture to lower the overall cost per product.
3.02. Existing Venture Companies shall be entitled to grant
sublicenses under the Software and Copyrights of the Licensed Intellectual
Property Rights to distributors and end users of Licensed Products solely to
the extent necessary to permit the distribution and use of such Licensed
Products, provided that Existing Venture Companies shall enter into enforceable
sublicense agreements with each such sublicensee under which the sublicensee
acquires no right, title or interest in any of the Licensed Intellectual
Property Rights other than the right to use and copy the subject matter thereof
as necessary for the distribution and use of such Licensed Products, and agrees
to be bound by the confidentiality provisions set forth in Article 4 hereof.
3.03. The license granted to Existing Venture Companies in Section
3.01 shall include the right to grant sublicenses within the scope of such
license to Subsidiaries of Existing Venture Companies, but, except as provided
in Section 3.02 and this Section 3.03, shall otherwise be non-sublicenseable,
non-transferable and non-assignable except in conjunction with the subsequent
sale of all or substantially all of the business of the design, development,
manufacture, lease and sale of Licensed Products, in which case Existing
Venture Companies shall be entitled to assign all of its rights under Sections
3.01 and 3.02 to the assignee of the such business provided that:
(a) Existing Venture Companies shall provide prior
written notice to Green of any such assignment;
(b) The licenses in Sections 3.01 and 3.02 will be
restricted to Licensed Products, and shall not extend to any other products or
services of such assignee;
(c) such assignee shall agree in writing to assume all
obligations of Existing Venture Companies hereunder and to strictly comply with
the terms of this IPR Agreement;
(d) Existing Venture Companies shall not be relieved of
any of its obligations hereunder; and
(e) all rights of Existing Venture Companies (and any of
their Subsidiaries hereunder) shall terminate on the Effective Time of any such
assignment.
3.04. Licensed Intellectual Property - Existing Venture Royalty
Products. Subject to the terms and conditions of this IPR Agreement and upon
Green' prior written consent, not to be unreasonably withheld, Green will grant
to Existing Venture Companies a personal, non-assignable, royalty-bearing,
non-exclusive, world-wide license under the Licensed Intellectual Property
Rights to design, develop, manufacture, use, reproduce, modify, perform, lease,
sell, offer for sale and import Existing Venture Royalty Products on
reasonable, non-discriminatory terms and conditions. Furthermore, such right
shall also include the right to have Existing Venture Royalty Products designed
and developed by a third Person for the manufacture, use, sale or lease by
Existing Venture Companies, provided such third Person is not a Competing
Company. Such right will include the right to have such Venture Royalty
Products made by a
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third person for the use, sale or lease by Existing Venture Companies, but only
when both of the following conditions are met:
(a) the designs, specifications and working drawings for
the manufacture of said Venture Royalty Products are furnished by Existing
Venture Companies; and
(b) said designs, specifications and working drawings
are in sufficient detail that no material modification by the manufacturer is
required other than (i) adaptation to the production processes and standards
normally used by the manufacturer which changes the characteristics of the
Existing Venture Royalty Products only to a negligible extent, or (ii) as
required by the manufacture to lower the overall cost per product.
3.05. Existing Venture Companies will be entitled to grant
sublicenses under the Software and Copyrights of the Licensed Intellectual
Property Rights to distributors and end users of Existing Venture Royalty
Products solely to the extent necessary to permit the distribution and use of
such Existing Venture Royalty Products, provided that Existing Venture
Companies shall enter into enforceable sublicense agreements with each such
sublicensee under which the sublicensee acquires no right, title or interest in
any of the Licensed Intellectual Property Rights other than the right to use
and copy the subject matter thereof as necessary for the distribution and use
of such Existing Venture Royalty Products, and agrees to be bound by the
confidentiality provisions set forth in Article 4 hereof.
3.06. The licenses granted to Existing Venture in Section 3.04 will
include the right to grant sublicenses within the scope of such license to
Subsidiaries of Existing Venture Companies, but, except as provided in Section
3.05 and this Section 3.06, shall otherwise be non-sublicenseable,
non-transferable and non-assignable unless explicitly provided for in the terms
of such licenses.
3.07. Transferred and Existing Venture Intellectual Property.
Subject to the terms and conditions of this IPR Agreement, Existing Venture
hereby grants to Green and its Affiliates a personal, non-assignable,
royalty-free, fully paid-up, non-exclusive, worldwide license under the
Transferred Intellectual Property Rights and the Existing Venture Intellectual
Property Rights, excluding those Transferred Intellectual Property Rights and
the Existing Venture Intellectual Property Rights which are Trademarks, to
design, develop, manufacture, use, reproduce, modify, perform, lease, sell,
offer for sale and import all products and services other than Green Royalty
Products. Existing Venture hereby agrees to grant to Green and its Affiliates a
personal, non-assignable, royalty-bearing, non-exclusive, worldwide license
under the Transferred Intellectual Property Rights and the Existing Venture
Intellectual Property Rights to design, develop, manufacture, use, reproduce,
modify, perform, lease, sell, offer for sale and import Green Royalty Products
on reasonable, non-discriminatory terms and conditions. Such licenses will
include the right to have all products made by another manufacturer for the
use, lease or sale by Green and its Affiliates, but only when both of the
following conditions are met:
(a) the designs, specifications and work drawings for the
manufacture of said products are furnished by Green or its Affiliate; and
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(b) said designs, specifications and working drawings
are in sufficient detail that no material modification by the manufacturer is
required other than (i) adaptation to the production processes and standards
normally used by the manufacturer which changes the characteristics of the
products only to a negligible extent, or (ii) as required by the manufacture to
lower the overall cost per product.
3.08. Improvements. Subject to the terms and conditions of this IPR
Agreement, Existing Venture Companies hereby agree to grant to Green and its
Affiliates a personal, non-assignable, royalty-bearing, non-exclusive,
worldwide license under Improvements to design, develop, manufacture, use,
reproduce, modify, perform, lease, sell, offer for sale and import products and
services on reasonable, non-discriminatory terms and conditions. Such license
will include the right to have all products made by another manufacturer for
the use, lease or sale by Green and its Affiliates, but only when both of the
following conditions are met:
(a) the designs, specifications and work drawings for the
manufacture of said products are furnished by Green or its Affiliate; and
(b) said designs, specifications and working drawings
are in sufficient detail that no material modification by the manufacturer is
required other than (i) adaptation to the production processes and standards
normally used by the manufacturer which changes the characteristics of the
products only to a negligible extent, or (ii) as required by the manufacture to
lower the overall cost per product.
3.09. Green and its Affiliates shall be entitled to grant
sublicenses under the Software and Copyrights of the Transferred Intellectual
Property Rights, the Existing Venture Intellectual Property Rights, and
Improvements to distributors and end users of Green' or its Affiliates'
products solely to the extent necessary to permit the distribution and use of
such products, provided that Green or its Affiliate shall enter into
enforceable sublicense agreements with each such sublicensee under which the
sublicensee acquires no right, title or interest in any of the Transferred
Intellectual Property Rights, the Existing Venture Intellectual Property
Rights, and Improvements other than the right to use and copy the subject
matter thereof as necessary for the distribution and use of such products, and
agrees to be bound by the confidentiality provisions set forth in Article 4
hereof.
3.10. The licenses granted to Green and its Affiliates in Sections
3.07 and 3.08 shall, except as provided in Sections 3.08, 3.09 and this Section
3.10, be non-sublicenseable, non-transferable and non-assignable except in
conjunction with the subsequent sale of all or substantially all of Green' or
its Affiliate's business related to such products, in which case Green or its
Affiliate shall be entitled to assign all of its rights under Sections 3.07 and
3.08 to the assignee of such business provided that:
(a) Green or its Affiliate shall provide prior written
notice to Existing Venture of any such assignment;
(b) such assignee shall agree in writing to assume all
obligations of Green and its Affiliates hereunder and to strictly comply with
the terms of this IPR Agreement;
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(d) Green and its Affiliates shall not be relieved of any
of its obligations hereunder; and
(e) all rights of Green (and any of its Affiliates
hereunder) shall terminate on the Effective Time of any such assignment.
3.11. All patent and industrial design licenses granted herein
shall commence on the Effective Time and shall continue for the entire terms of
the patents (and their extensions) and industrial designs under which licenses
are granted subject to termination as provided herein. All other licenses
granted hereunder shall be perpetual, subject to termination as provided
herein. Any sublicense granted hereunder to an Affiliate or Subsidiary shall
terminate on the date such entity ceases to be an Affiliate or Subsidiary, as
the case may be, unless terminated earlier as provided herein.
3.12. License to CMTS IPR. Notwithstanding that CMTS IPR form part
of Transferred Intellectual Property Rights, Existing Venture hereby grants to
Green and its Affiliates a royalty-free, non-exclusive license, with the right
to grant sublicenses under all CMTS IPR to a third Person. Provided that if
such third Person is Broadband Access Systems, River Delta, River Stone or
Cadent, Green shall not have the right to sublicense the CMTS IPR for use in
the delivery of narrowband or broadband services over Hybrid Fiber Coaxial
Cable Networks nor the right to sublicense for non-Hybrid Fiber Coaxial Cable
Networks applications if such applications are available from Existing Venture.
3.13. Supply License to Green Components. It is the intention of
the Parties that Existing Venture Companies and Green will enter into an
agreement setting forth their respective rights and obligations relating to the
supply of Green Components to Existing Venture Companies. Furthermore, the
Parties intend that in the event Green fails to supply Green Components to
existing Venture Companies in accordance with the terms and conditions of such
supply agreement, Green will grant to Existing Venture Companies a
non-exclusive, royalty-free license under Green' Intellectual Property Rights
embodied in, or used in the manufacture of, Green Components to make or have
made Green Components solely for use in the manufacture and sale of Licensed
Products.
3.14. Packetport. Notwithstanding that Licensed Products includes
that Existing Venture Product known as Packetport, licenses granted in Section
3.01 by Green to Existing Venture Companies under Licensed Intellectual
Property Rights shall include rights to design, develop, manufacture, use,
reproduce, modify, lease, sell, offer for sale or import Packetport as it
exists as of the Effective Time, but shall not include, without the express
written consent of Green, natural improvements or evolutions of Packetport
(a) for a period of twelve (12) months; or
(b) which no longer support the standard quality of
service and signaling requirements of Green' product known as Succession Call
Server,
except to the extent such natural improvements or evolutions of Packetport
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(c) are necessary to interoperate with a product which
conforms with a widely accepted industry standard, or
(d) are necessary to support the standard quality of
service and signaling requirements of Succession Call Server; or
(e) maintain the standard quality of service and
signaling requirements of Succession Call Server while reducing the unit cost
of Packetport.
Subject to the foregoing, but notwithstanding Section 3.04, Green hereby grants
to Existing Venture Companies a personal, non-assignable, royalty-free,
fully-paid, non-exclusive, world-wide license under the Licensed Intellectual
Property Rights embodied in Packetport to design, develop, manufacture, use,
reproduce, modify, perform, lease, sell, offer for sale and import natural
improvements or evolutions of Packetport (whether or not used in Hybrid Fiber
Coaxial Cable Networks) based on established design specifications for CPE
devices which are compatible with Green' Fiber-to-the-Home products. The
licenses granted in this Section 3.14 shall include the right to have such
evolutions of Packetport designed and developed by a third Person for the
manufacture, use, sale or lease by Existing Venture Companies, provided such
third Person is not a Competing Company. Furthermore, such right shall also
include the right to have such evolutions of Packetport made by a third Person
for the use, sale or lease by Existing Venture Companies, but only when all of
the following conditions are met:
(f) the designs, specifications and working drawings for
the manufacture of such products are furnished by Existing Venture Companies;
and
(g) said designs, specifications and working drawings
are in sufficient detail that no material modification by the manufacturer is
required other than (i) adaptation to the production processes and standards
normally used by the manufacturer which changes the characteristics of such
products only to a negligible extent, or (ii) as required by the manufacture to
lower the overall cost per unit; and
(h) any Software embodied in such evolutions of
Packetport is furnished to the manufacturer in object code only.
All Intellectual Property Rights, excluding Patents, that as of the Effective
Time are (i) owned by Green, and (ii) either exclusively embodied in or used by
Packetport, or exclusively used in the development, manufacture and sale of
Packetport (the "Transferred Packetport IPR"), will become Transferred
Intellectual Property effective fifteen (15) months from the Effective Time. At
the same time, Green will grant Existing Venture Companies a royalty-free,
non-exclusive license, with the right to grant sublicenses, under any Patents
that as of the Effective Time are owned by Green and embodied in, or used by
Packetport, solely to make, use and sell Packetport and natural improvements
and evolutions thereof. Also at the same time, Existing Venture Companies will
grant Green and its Affiliates an unrestricted, royalty-free, non-exclusive
license, with the right to grant sublicenses, under all Transferred Packetport
IPR, and under all improvements, innovations, enhancements, modifications or
derivative works of Transferred Packetport IPR created by Existing Venture
Companies during the previous fifteen (15) months. During the fifteen months
prior to the transfer of the PacketPort IPR, Green shall use reasonable
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<PAGE> 15
efforts to consult with Existing Venture prior to sublicensing of the
PacketPort IPR and any royalty rights received by Green from the sublicensing
of PacketPort IPR for use in the delivery of narrowband or broadband services
over Hybrid Fiber Coaxial Cable Networks shall be assigned to Existing Venture.
ARTICLE IV
CONFIDENTIAL INFORMATION
4.01. The Parties acknowledge that the subject matter of the
Licensed Intellectual Property Rights, the Transferred Intellectual Property
Rights, the Existing Venture Intellectual Property Rights and the Improvements
include Confidential Information that is proprietary to and constitutes trade
secrets of the respective owners of such Intellectual Property Rights.
Accordingly, for a period of ten (10) years after the Effective Time, the
receiving Party shall hold such Confidential Information in confidence for the
disclosing Party and only make use of, or disclose it in accordance with the
provisions of this Article 4.
4.02. The receiving Party shall hold secret and not disclose to any
Person (except to such of its own employees and permitted sublicensees as are
required to use the Confidential Information in the course of exploiting its
license rights hereunder, and then only under an obligation of secrecy binding
upon such employees or sublicensees) any of the Confidential Information,
except as follows:
(a) as is reasonably necessary in the provision of
procurement specifications to suppliers for the procurement by the receiving
Party and permitted sublicensees of materials, parts, components and assemblies
for use in the manufacture, use and sale of products and services as licensed
herein and as reasonably necessary to enable end users of such products and
services to operate and maintain them, provided, in each case, such persons
agree to be bound by the confidentiality provisions of this Article 4; and
(b) to the extent the Confidential Information: (i)
becomes available to the public from a source other than the receiving Party;
(ii) is obtained by the receiving Party without restrictions on use or
disclosure from a third Person who did not receive it, directly or indirectly,
from the disclosing Party; (iii) is documented as being known to the receiving
Party prior to its disclosure by the disclosing Party; or (iv) is documented as
being independently developed by the receiving Party without reference to the
Confidential Information.
4.03. The receiving Party and its permitted sublicensees shall not
make or have made or permit to be made, any copies of the Confidential
Information except those copies which are necessary for the exercise of the
rights granted hereunder, and all such copies shall, upon reproduction by the
receiving Party and its permitted sublicensees and whether or not in the same
form or format as the Confidential Information, contain the same proprietary
and confidentiality notices or legends which appear on the disclosing Parties'
Confidential Information provided pursuant to this IPR Agreement.
4.04. The receiving Party and its permitted sublicensees shall use
the same degree of care as is used to protect their own confidential
information of a similar nature, but no less than
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<PAGE> 16
reasonable care, to prevent the unauthorized use, dissemination or publication
of the Confidential Information.
ARTICLE V
REPRESENTATIONS AND WARRANTIES
5.01. Save and except as set out in Schedule H attached hereto,
Green has no Knowledge of any other agreement, written or oral, relating to
Intellectual Property Rights, that is material to the use and enjoyment of the
Transferred Intellectual Property Rights. Save and except as set out in
Schedule H attached hereto, Green has no Knowledge of any outstanding claims,
or threatened claims, made in writing during the past two years that any of the
Transferred Intellectual Property Rights infringes any Intellectual Property
Right of any third Person.
5.02. EXCEPT AS PROVIDED IN SECTION 5.01, NO PARTY MAKES, AND THERE
ARE NO WARRANTIES, REPRESENTATIONS OR CONDITIONS, EXPRESS OR IMPLIED, STATUTORY
OR OTHERWISE RELATING TO THE TRANSFERRED INTELLECTUAL PROPERTY RIGHTS, THE
LICENSED INTELLECTUAL PROPERTY RIGHTS, THE EXISTING VENTURE INTELLECTUAL
PROPERTY RIGHTS, OR THE IMPROVEMENTS, OR TO THIS IPR AGREEMENT. THE PARTIES
EXPRESSLY EXCLUDE ANY WARRANTIES, CONDITIONS OR REPRESENTATIONS OF
MERCHANTABILITY, NON-INFRINGEMENT, OR FITNESS FOR ANY PARTICULAR PURPOSE.
5.03. IN NO EVENT SHALL ANY PARTY, ITS AGENTS OR EMPLOYEES, BE
LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES,
INCLUDING, WITHOUT LIMITATION, LOST PROFITS, LOST DATA, OR LOST SAVINGS, IN
CONNECTION WITH THIS IPR AGREEMENT OR THE TRANSFERRED INTELLECTUAL PROPERTY
RIGHTS, THE LICENSED INTELLECTUAL PROPERTY RIGHTS, THE EXISTING VENTURE
INTELLECTUAL PROPERTY RIGHTS, OR THE IMPROVEMENTS, HOWSOEVER CAUSED, WHETHER
ARISING IN CONTRACT (INCLUDING FUNDAMENTAL BREACH), TORT (INCLUDING NEGLIGENCE)
OR OTHERWISE.
5.04. Without limiting the generality of Section 5.02, nothing
contained in this IPR Agreement shall be construed as:
(a) requiring the filing of any patent application or
application to register any industrial design, the securing of any patent or
industrial design, or the maintaining of any patent or industrial design in
force;
(b) a warranty or representation by the licensor, or an
admission by the licensee, as to the validity or scope of any of the Licensed
Intellectual Property Rights, Transferred Intellectual Property Rights,
Existing Venture Intellectual Property Rights or Improvements;
(c) a warranty or representation that any manufacture,
development, sale, lease, use or importation will be free from infringement of
third party patents or other intellectual property rights;
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<PAGE> 17
(d) an agreement to bring or prosecute actions or suits
against third parties for infringement or misappropriation;
(e) an obligation to furnish any assistance or any
technical information under this IPR Agreement;
(f) conferring any right to use, in advertising,
publicity or otherwise, any name, trade name or trade mark, or any contraction,
abbreviation or simulation thereof; or
(g) conferring by implication, estoppel or otherwise
upon any Party any license or other right under any patent or other
Intellectual Property Right, except the licenses and rights expressly granted
herein.
ARTICLE VI
TERMINATION
6.01. If within nine (9) months of the Effective Time a Competing
Company has entered into an agreement under which it will acquire the right,
either directly or indirectly, to elect or appoint a majority of the members of
the board of any Existing Venture Company, the licenses granted to Existing
Venture Companies under Sections 3.01, 3.02, 3.03, 3.04, 3.05, 3.06 and 3.14
shall immediately terminate.
ARTICLE VII
MISCELLANEOUS
7.01. Counterparts. This IPR Agreement may be executed in one or
more counterparts, each of which when executed shall be deemed to constitute an
original but all of which when taken together shall constitute one and the same
instrument.
7.02. Governing Law. This IPR Agreement shall be governed by, and
interpreted in accordance with, the laws of the Province of Ontario, Canada,
without regard to the conflict of law principles thereof.
7.03. Assignment; Change of Control. Except as set forth
previously, Existing Venture shall not assign or transfer this IPR Agreement,
in whole or in part, whether by merger, operation of law or otherwise without
the prior written consent of Green. Except as may be contemplated in the
Ancillary Agreements, any change of control of Existing Venture shall be deemed
to constitute an assignment for the purposes of this Section.
7.04. Expenses. Except as otherwise provided herein, each Party
hereto will bear all expenses incurred by it in connection with this IPR
Agreement and the transactions contemplated hereby.
7.05. Notices. All notices, requests and other communications
hereunder to a Party shall be in writing and shall be deemed given if
personally delivered, telecopied (with confirmation) or three business days
after being mailed by registered or certified mail (return
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<PAGE> 18
receipt requested) or one business day after being delivered by overnight
courier to such Party at its address set forth below or such other address as
such Party may specify by notice to the other Party hereto.
If to Green:
Green Corporation
[Address]
Attention:
Fax:
Phone:
With a copy to:
Green Inc.
[Address]
Attention:
Fax:
Phone:
If to Existing Venture:
Existing Venture LLC
[Address]
Attention:
Fax:
Phone:
With a copy to:
Egret Corporation
[Address]
Attention:
Fax:
Phone:
7.06. Entire Agreement. This IPR Agreement sets forth the entire
agreement and understanding between the Parties as to the subject matter
hereof, and merges all prior discussions between them, and neither Party hereto
shall be bound by any conditions, definitions, warranties, understandings, or
representations with respect to such subject matter other than as expressly
provided herein, or as duly set forth on or subsequent to the date hereof in
writing, signed by duly authorized officers of the Parties.
7.07. Publicity. The provisions of this IPR Agreement shall be held
in confidence by the Parties and only disclosed as may be agreed to by the
Parties or as may be required by applicable law. Neither Party shall make
public statements or issue publicity or media releases with regard to this IPR
Agreement without the prior written approval of the other Party.
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<PAGE> 19
7.08. Severability. Any term or provision of this IPR Agreement
which is invalid or unenforceable in any jurisdiction shall, as to that
jurisdiction, be ineffective to the extent of such invalidity or
unenforceability without rendering invalid or unenforceable the remaining terms
and provisions of this IPR Agreement or affecting the validity or
enforceability of any of the terms or provisions of this IPR Agreement in any
other jurisdiction. If any provision of this IPR Agreement is so broad as to be
unenforceable, the provision shall be interpreted to be only so broad as it is
enforceable.
IN WITNESS WHEREOF, the parties hereto have caused this IPR Agreement
to be executed in counterparts by their duly authorized officers, all as of the
day and year first above written.
GREEN LIMITED
By:
--------------------------------------------
Name:
Title:
By:
--------------------------------------------
Name:
Title:
EXISTING VENTURE LLC
By:
--------------------------------------------
Name:
Title:
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